In making this determination, all of the facts must be viewed in the light most favorable to the non-moving party and all reasonable inferences must be drawn in favor of the non-moving party. Id. at 256. Once the moving party has met the initial burden of demonstrating the absence of a genuine issue of material fact, the non-moving party must establish the existence of each element of its case. J.F. Feeser, Inc. v. Serv-A-Portion, Inc., 909 F.2d 1524, 1531 (3d Cir. 1990), cert. denied, 499 U.S. 921, 111 S. Ct. 1313, 113 L. Ed. 2d 246 (1991) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986)).

FACTUAL BACKGROUND

According to the Complaint, in March, 1985, Plaintiff registered the name and mark "First Keystone Federal" with the Principal Register of the United States Patent and Trademark Office. This registration alleged a date of first use of January, 1982 for banking services. Since registration, Plaintiff's mark has been in continuous use and has become incontestable.

It is uncontested that Defendant incorporated under the name First Keystone Mortgage, Inc in 1985 and began business in 1987. In 1988, one of Plaintiff's employees became aware of Defendant's similar name and contacted Defendant's President to discuss the similarity. Defendant's President did not wish to discuss the matter with a junior manager of Plaintiff, and the matter was dropped until 1993 when Plaintiff mailed Defendant a cease-and-desist letter. This litigation soon followed.

In this case, both parties appear to concur that Plaintiff's mark is incontestable under 15 U.S.C. § 1065. Incontestability is not as envious a status as the name implies, however. The Lanham Act provides for eight defenses against an incontestable mark. 15 U.S.C. § 1115(b). If a defendant can prove one of these defenses, which include laches, estoppel and acquiescence, then the plaintiff loses the presumptions of validity, ownership and right to protection. Ford Motor Co., 930 F.2d at 291.

Defendant argues that Plaintiff's mark is contestable due to the doctrines of laches and acquiescence and because the mark has no secondary meaning.

Defendant argues that Plaintiff inexcusably delayed instituting suit because it is uncontested that Plaintiff was aware of Defendant at least by 1988 when Plaintiff's employee called Defendant's President about their similar names. Defendant argues further that it has been prejudiced by the delay between 1988 and now in that it expended resources on advertising and expanding its business. Defendant offers its President's deposition to support this allegation of prejudice.

In return, Plaintiff argues that Defendant has not demonstrated laches. First, it offers evidence that Defendant's competing activities dramatically increased in 1992 and 1993. Pl.'s Br. at Exs. D & E. The Third Circuit has held that when an alleged infringement changes magnitude, a plaintiff is not guilty of laches if it acts promptly after the nature of the infringement changes. University of Pittsburgh, 686 F.2d at 1046. Second, Plaintiff asserts that Defendant was not prejudiced by the delay. Plaintiff proffers an excerpt of Defendant's President's deposition testimony, where he stated that Defendant did not do anything in reliance on Plaintiff's inactivity.

We find that the parties have produced conflicting evidence on both elements of laches. For this reason, we find genuine issues of material fact and must deny Defendant's request for summary judgment based on laches. As a result of this ruling, we need not examine Plaintiff's affirmative defenses to laches.

Plaintiff argues that its mark is presumed strong because the mark is incontestable under 15 U.S.C. § 1065. Therefore, according to Plaintiff, Defendant's arguments as to its geographical descriptiveness are irrelevant, because descriptiveness is not one of the permitted defenses to an incontestable mark under 15 U.S.C. § 1115. Park ' N Fly, Inc. v. Dollar Park and Fly, 469 U.S. 189, 105 S. Ct. 658, 83 L. Ed. 2d 582 (1985).

Plaintiff's reliance on its incontestable status and Park 'N Fly is misplaced, however. Incontestability only addresses the first three aspects of an infringement analysis, namely, whether a mark is valid, entitled to protection and owned by a plaintiff. It is true that once a mark is incontestable, its validity cannot be attacked on the basis that it is merely descriptive, and therefore, not worthy of trademark protection. Id. at 201. At this stage of our analysis, however, we are not concerned with the mark's validity, but its strength.

In Plaintiff's favor, though, is the doctrine that a registered trademark is presumed to be distinctive, which is the strongest type of mark. Lois Sportswear, 799 F.2d at 871. This does not mean that a mark's strength cannot be attacked, however. Oreck Corp., 803 F.2d at 171. Incontestability is simply one piece of the overall determination of a mark's strength. Lone Star Steakhouse & Saloon v. Alpha of Va., 43 F.3d 922, 935 (4th Cir. 1995); Miss World, 856 F.2d at 1449; Lois Sportswear, 799 F.2d at 871. Plaintiff relies wholly on its incontestability argument to support the strength of its mark. Plaintiff does not, however, present evidence to support its position that its mark is strong nor to controvert Defendant's evidence. Accordingly, evidence as to the mark's weakness weighs in Defendant's favor.

3. Degree of Consumer Care

Defendant argues that the amount of money involved in a mortgage is generally so high that consumers take great care in choosing their mortgagee and educating themselves about the different mortgage companies and their products. Accordingly, Defendant argues, there is little chance of confusion because consumers will know the precise name of the company with which they want to deal. Defendant does not, however, offer any evidence to support this assertion. In turn, Plaintiff neither contradicts Defendant's argument nor offers its own evidence on the matter. For this reason, this factor does not weigh in favor of either party.

Defendant does not present any evidence to contradict Plaintiff's evidence, but instead, argues that Plaintiff's evidence does not demonstrate actual confusion. Defendant points out that Plaintiff has not shown evidence that any mortgage buyers have bought a mortgage from one company when they meant to purchase it from another. Furthermore, Defendant argues that isolated examples of confusion in addresses and telephone numbers do not demonstrate confusion in the relevant marketplace. Id.

We find that Plaintiff's evidence is not sufficient to demonstrate actual confusion at the summary judgment stage, although we disagree with Defendant that only pre-sale confusion is relevant to this inquiry. Lois Sportswear, 799 F.2d at 872 (post-sale confusion acceptable proof); Oreck, 803 F.2d at 173 (indicia of actual confusion include misdirected telephone calls and mail). We find a material issue of fact as to what the relevant marketplace is and whether there has been actual confusion within it. Accordingly, this factor weighs in favor of neither party.

5. Alleged Infringer's Intent

Defendant offers evidence that it had no intent to infringe Plaintiff's mark because it chose its name before Plaintiff's mark was registered. It proffers its Articles of Incorporation filed with Pennsylvania's Department of State Corporation Bureau. This document states its name as First Keystone Mortgage, Inc. and was filed on March 4, 1985. Plaintiff's evidence is that it registered its mark on March 12, 1985, but had been using it continuously since 1982. We find a genuine issue of material fact as to whether Defendant had actual notice of Plaintiff's mark before 1985 from Plaintiff's pre-registration use, and therefore, this factor does not weigh in any party's favor.

6. Conclusion

To summarize, we found that the only factor of the infringement analysis that weighed in Plaintiff's favor was similarity of marks. We found that the only factor that weighed in Defendant's favor was the strength factor, and that there were genuine issues of material fact as to the other factors. Because the scales are evenly balanced and because of the numerous issues of material fact that exist, we find that the issue of infringement is not amenable to summary judgment. For this reason, both parties' motions for summary judgment on this ground are denied.

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